Ex parte PTAB Guiding Patent Prosecution

Why Analyze ex parte PTAB Appeals Decisions?

Welcome to the Anticipat Blog, where we are serious in analyzing appeals decisions at the Patent Trial and Appeal Board (PTAB). Here are a few reasons why.

We believe that the current patent prosecution process is expensive, inefficient and unpredictable. By sheer luck, an application can sail through to allowance for no other reason than it was assigned to a certain Examiner. For many other applications, several rounds of prosecution can be spent quibbling over egregiously unreasonable rejections before finally receiving an Office Action that should have sent in the first place.

We believe having more data can alleviate the expense, the unpredictability and the inefficiencies of the patent prosecution process. In particular, appeals decisions provide a realistic snapshot of how the Patent Office is ultimately applying patent law. With this data in mind, wasteful rejections can be shortcut rather than unnecessarily amending claims or adding more estoppel to the record.

Admittedly, not all the decisions are binding (only precedential decisions are authoritative while informative decisions provide guidance on the rules and practices of the PTAB). But when these thousands of routine decisions are aggregated, we believe that data set shows the trends and patterns that can be used to calibrate expectations for expense, predictability and efficiency of obtaining a patent.

Despite the promising uses, we think PTAB data (especially appeals decisions data) is currently presented in ways that are either difficult to use or misleading. At Anticipat, we believe in transparently cataloging appeals decisions through granular analysis of each decision. Indeed, predictive power is only possible when the necessary context is gathered by drilling down into the specific issues and outcomes for each appeals decision.

We hope you stay tuned for relevant posts on appeals data, where we will highlight trends and patterns, as well as developments and practice pointers from individual decisions. To subscribe to the daily decisions email, you can signup to the daily recap emails (or to a filtered alerts email) here.